Star Scientific Case Reversed and Remanded by Court of Appeals

The United States Court of Appeals for the Federal Circuit ruled in the Star Scientific Inc. v. R.J. Reynolds Tobacco Co. case yesterday, August 25, 2008.

The following is excerpted from the decision:

Plaintiff-Appellant Star Scientific, Inc. ("Star") appeals from a final judgment in favor of Defendants-Appellees R.J. Reynolds Tobacco Company (N.C.) and R.J. Reynolds Tobacco Company (N.J.) (collectively, "RJR"). The district court entered memoranda and orders: (1) holding, after a bench trial, that Star's U.S. Patent Nos. 6,202,649 ("the '649 patent") and 6,425,401 ("the '401 patent") are unenforceable due to inequitable conduct; and (2) granting summary judgment of invalidity of all asserted claims of the '649 and '401 patents due to indefiniteness. See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., No. 8:01-cv-1504, slip op. at 46 (D. Md. June 26, 2007) ("Inequitable Conduct Order"); Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., No. 8:01-cv-1504, slip op. at 12-14 (D. Md. June 22, 2007) ("Indefiniteness Order").

Because the district court's judgment as to inequitable conduct was based on factual findings that we deem clearly erroneous, we reverse the judgment of unenforceability of the '649 and '401 patents. We also reverse the grant of summary judgment as to indefiniteness because we conclude that the claim term at issue, "anaerobic condition," is not indefinite, and we remand for further proceedings on infringement and validity.

...the district court's finding of deceptive intent as to both patents-in-suit was based primarily on its acceptance of RJR's theory that Williams and Star conspired to deliberately prevent Delmendo and his colleagues at the Sughrue firm from disclosing the Burton letter to the PTO by replacing them with the Banner firm and purposely keeping the Banner firm ignorant of the Burton letter. We hold that this "quarantine" theory was not supported by clear and convincing evidence. As a result, we hold that the district court's finding of deceptive intent with regard to the '649 patent was clearly erroneous.

The district court's contrary conclusion was based on its misunderstanding that claim definiteness requires that a potential infringer be able to determine if a process infringes before practicing the claimed process. But we disclaimed any such approach in Invitrogen Corp. v. Biocrest Manufacturing, L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005). We explained that Stratagene, in making a similar argument, was "really talking about the difficulty of avoiding infringement, not indefiniteness of the claim." Id. "The test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention." Id. (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005)); see also Datamize, 417 F.2d at 1354 (holding that "indefiniteness does not depend on the difficulty experienced by a particular person in comparing the claims with the prior art or the claims with allegedly infringing products or acts"). As construed by the district court, the term "anaerobic condition" clearly delineates the bounds of claim scope and thus is not indefinite. The district court's grant of summary judgment of indefiniteness must therefore be reversed.

Read the full opinion here.